Many times two SDOs may not work together on the joint development of a standard (as discussed in the previous section). Rather, one SDO may develop a specification and then hand it off to another SDO for further development work, international adoption, commercialization, etc. It is equally important for an SDO in this scenario to have a defined policy governing the submission of its work to other SDOs for completion/adoption/promotion, or for the receipt of the same from another SDO. As identified below using OASIS and INCITS as examples, the concerns in this latter scenario are very similar to those discussed above in connection with two SDOs collaborating together from the outset on the development of a joint standard.
The following is an excerpt from the OASIS Liaison Policy (http://www.oasis-open.org/committees/liaison_policy.php) that provides guidance on how this type of hand-off of a specification must be done when OASIS is involved:
The request for permission to submit a specification to another organization may originate with a TC [Technical Committee], the TAB [Technical Advisory Board], or OASIS staff, but must include the following:
· The name of the organization and the organization's committee/group to which the submission will be made.
· The purpose of the submission (e.g., for approval under the other organizations' process; for inclusion in the other organization's work plan, etc.), as well as a short description of the other organization's approval process, including estimated time required, stages of approval and who votes at each step, and the desired outcome (i.e., what will the spec be called once it is approved).
· How the submission will benefit OASIS (e.g., enhance the status of the spec by
having the other organization's name on it).
· The copyright terms used by the other organization in regard to the submission.
Generally only completed and approved work (i.e., an approved OASIS Standard) should be submitted to another organization. If the work is not yet approved as an OASIS Standard, the proposal should include the reason why the work is not being completed and/or approved under the OASIS TC Process.
As OASIS owns the copyright on specifications produced by OASIS technical committees, submitting specifications to other organizations according to the guidelines of this policy will require the approval of the OASIS President. Approval to submit OASIS specifications with any terms other than those specified in this policy will require approval by the OASIS Board.
The OASIS copyright should remain on the specification when it is published by the other organization, i.e., both OASIS' and the other organization's copyright will appear on the specification. However, OASIS is willing for the other organization's copyright to be the only one on the specification as long as:
· The other organization agrees that OASIS will continue to maintain the specification until such time as OASIS gives up that right;
· The other organization agrees that it will not further modify the specification until such time as OASIS gives up the right to further maintenance; and
· OASIS can continue to publish the OASIS-copyrighted version of the specification under our copyright and distribution policy.
A memorandum of understanding should be signed between the two organizations to ensure that the above items are mutually understood. See, e.g., MOU Between UN/CEFACT and OASIS (http://www.ebxml.org/mou.pdf).
Even with the OASIS Liaison Policy (which is more developed than most) in place for guidance, there is still potential for unintended consequences. For example, while the above guidelines address copyright issues, what if the patent policy of the second SDO (SDO 2) is different from, or inconsistent with, the first SDO’s (SDO 1) patent policy? In such a circumstance, how might the rights and obligations of essential patent holders who contributed to the SDO 1 standard be affected, if at all, by the fact that SDO 2, with a different patent policy, is to be in charge of adoption, promotion, and implementation of the standard? Can members of SDO 1 refuse to license implementers of the standard as adopted by SDO 2 under the terms of the SDO 2’s patent policy? Would SDO 2 have to seek out and obtain separate patent licensing commitments from each contributor/essential patent holder? Similarly, although SDO 1 may own the copyright to the final specifications produced by SDO 1 technical committees, and therefore be entitled to pass off such specifications for further adoption, promotion, etc. by SDO 2, consider whether contributors to an SDO 1 specification could object, on copyright infringement grounds, if SDO 2 were to substantially change the SDO 1 specification or excise only discrete portions of that specification (including specific SDO 1 member contributions) for uses quite different from what SDO 1 and the SDO 1 contributing member intended.
All of these issues should be considered and addressed before an SDO attempts to hand off, or accept, a specification to or from another SDO, in order to avoid confusion and legal risks down the road that could negatively impact standards development and deployment.
INCITS (http://www.incits.org/) is accredited by, and operates under rules approved by the American National Standards Institute (ANSI) (http://www.ansi.org/). An organization not accredited by ANSI may propose that a candidate standard be submitted for INCITS processing, or the organization that developed it may request INCITS processing. INCITS has developed a “Fast-Track” process for analyzing and accepting standards developed by other SDOs. This process is set out below.
INCITS “Fast-Track” Process for Externally Developed Standards
When such an initiative is being considered within INCITS or a preliminary inquiry is made by the sponsor, a proposal describing the candidate standard, its purpose, and scope is sent to the INCITS Secretariat for distribution to INCITS. The INCITS Secretariat issues a call for comments on the proposal, and INCITS members are asked to assess the proposal with respect to the following criteria:
· Is the proposed standard within the scope of INCITS?
· If there is a TC with responsibility for scope of this work, does the TC have objections to continued processing?
If no objections are raised during this review, the developer will then be invited to submit the following:
(1) Candidate standard.
(2) Memorandum of understanding, which may be negotiated by the INCITS Secretariat on behalf of INCITS, detailing: (a) agreement to respond and participate in accordance with the INCITS rules and procedures; (b) agreement regarding availability and distribution of copies for public review and balloting;
(c) agreement for maintenance responsibility in accordance with ANSI procedures; (d) agreement that interpretations shall be accomplished in accordance with INCITS procedures; and (e) agreement that participation in further processing of the document be open to all directly and materially affected interests. See, e.g., MOU between INCITS and Coudscape, Inc. (http://www.incits.org/FastTrack/it990095.pdf).
(3) Any other documentation the developer feels is relevant.
Again, if objections are raised, the INCITS Secretariat will distribute those objections to INCITS and the proposer. The organization submitting the candidate standard will be required to respond to the objections raised in addition to the other documentation specified above. The entire package will be submitted to INCITS for approval. Upon receipt, INCITS votes whether to accept the proposal and initiate a public review. Upon approval, the INCITS Secretariat shall assign a liaison project number, and processing commences. The INCITS Secretariat will notify the TC chairs and encourage them to notify their committee of the candidate standard’s public review period. The Secretariat’s notification will include the results of the INCITS vote and comments received.
The Secretariat initiates the following:
· 2 month/45-day public review (& announcement in ANSI’s Standards Action)
· Call for patents
· Press release
· The Secretariat will register all comments. The proposer will respond to the comments. The Secretariat will distribute all comments and responses to INCITS prior to the 30-day ballot.
After INCITS approval, the draft is sent to ANSI for final approval, and the approved standard is published shortly afterwards.
The type of rigorous review and analysis that INCITS performs before accepting a proposed standard from another organization highlights the risks associated with such acceptance. It is particularly important that the INCITS-type process invoking a “call for patents” include a review of any essential patents or essential patent holders/contributors to the proposed standard (as well as an associated review of the scope of the copyright license extended by the original contributions to the proposed standard). To the extent such IP issues are not fully investigated and approved, the same risks discussed above relating to the acceptance of another SDO’s work could arise.
